WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A., Milan Swiss Branch Mendrisio and Giorgio Armani S.p.A. v. Chaiyakarn Sudampanthorn
Case No. D2013-0825
1. The Parties
The Complainants are Giorgio Armani S.p.A., Milan Swiss Branch Mendrisio, of Mendrisio, Italy (the “First Complainant”) and Giorgio Armani S.p.A. of Milan, Italy (the “Second Complainant”) represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Chaiyakarn Sudampanthorn of Suratthani, Thailand.
2. The Domain Name and Registrar
The disputed domain name <armanihotels.asia> is registered with DotArai Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2013. On May 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on June 14, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainants are part of a fashion group which also develops hotels. The First Complainant is the legal owner of a Hong Kong trademark registration for AHR ARMANI HOTELS & RESORTS, no. 300418789, which was registered on March 7, 2006. The Second Complainant is the legal owner of an Italian trademark registration for ARMANI HOTELS, no. 1203947, which was registered on June 30, 2009 and a US trademark registration for ARMANI HOTELS & RESORTS, no. 3154223, which was registered on October 10, 2006. The disputed domain name was registered on August 8, 2008.
5. Parties’ Contentions
This section contains the Complainants’ submissions with which the Panel may or may not agree.
The disputed domain name is identical to the Complainants’ mark ARMANI HOTELS, incorporates entirely the Complainants’ major trademark ARMANI and is very similar to the Complainants’ trademarks ARMANI HOTEL, ARMANI HOTELS & RESORTS and AHR ARMANI HOTELS & RESORTS.
The Respondent has not been commonly known by the dispute domain name, has no connection or affiliation with the Complainants and has not received any license or consent to use the ARMANI marks in a domain name or in any other manner. The Respondent has not acquired any legitimate rights whatsoever in the disputed domain name or any name corresponding to it. The Respondent is not using the disputed domain name.
The mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name itself. It is very unlikely that the Respondent would not have known of the existence of the Complainants’ legal rights in the wording “armanihotels” at the time of the registration. The fame of the Complainants’ trademarks motivated the Respondent to register the disputed domain name.
The Respondent could not have registered the domain name without knowing that, by doing so, it was either infringing on the Complainants’ trademark or that it was not abiding by the terms of the Policy. The Respondent was officially informed of the Complainants’ rights in a cease and desist letter requesting the transfer of the disputed domain name. The Respondent replied that it might consider transferring the disputed domain name on receipt of approximately USD 10,000.
The registration of a domain name consisting of the name and/or trademarks of a worldwide famous fashion stylist combined with the word “hotels” which distinguish one of the several fields of activity of the stylist reveals the Respondent’s intention to exploit the notoriety, importance and value of this name and take advantage of the unlawful use of the trademarks that contain that name.
The Respondent did not reply to the Complainant’s contentions. The Respondent did reply to the letter of the Complainants’ lawyer dated May 16, 2012 in an email of May 24, 2012, indicating that he had registered over 100 Asian domain names during the “Gold Rush Period… many years ago” as an investment asset.
6. Discussion and Findings
Under the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which they have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the Second Complainant’s trademark, ARMANI HOTELS and the gTLD suffix “.asia”. The First Complainant owns a trademark which includes the entirety of the disputed domain name with the exception of the gTLD suffix. The disputed domain name is confusingly similar to both Complainants’ trademarks.
B. Rights or Legitimate Interests
The Respondent is not called “Armani Hotels” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainants have ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainants’ claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
When registering the domain name, the Respondent clearly knew of the Complainants’ rights or at the very least to the Second Complainant’s rights to the name ARMANI. It is apparent that he bought the name as a private investment and has been holding it since 2008 as such in the hope that someone will want to buy it from him for a price that exceeds the Respondent’s out-of-pocket expenses directly related to the disputed domain name. Under paragraph 4(b)(i) of the Policy, this is evidence of registration and use in bad faith.
The Respondent has not put any content on the website to which the disputed domain name resolves. However, the act of retaining a domain name without any right or legitimate interest in doing so, knowing that it replicates someone else’s trademark and thus prevents that other person from exploiting the name, is itself use in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <armanihotels.asia> be transferred to the Complainants.
Date: June 28, 2013